News

The European Patent Office (EPO) has announced a series of fee changes that will come into effect on 1 April 2018. These are not inflation-based fee changes, but changes designed to better reflect the expenses of the EPO. As such, not all of the fees will change and some will be reduced.

The biggest change is to the appeal fee which will now be split into two tiers. The first tier will apply to natural persons, small and medium sized enterprises, non-profits, universities and public research organisations who will continue to pay €1,880 (the same appeal fee as before the changes). The second tier will apply to all other entities who will be charged the increased fee of €2,255.

To qualify for the lower fee, it will be necessary to file a statement indicating that the appellant is entitled to do so. The appellant’s status when filing the appeal is the relevant status.

Other changes include:
• The €190 fee reduction in the supplementary search fee for applications where the International Search Report was prepared by the Australian, Chinese, Japanese, Korean, Russian or US patent office will no longer be available.
• The reduction in the examination fee due on a European Regional Phase application for which the EPO prepared an International Preliminary Examination report has been increased from 50% to 75% (a reduction from €1825 to €1369).
• The fee for an international search (and for a supplementary international search) on an international application will be reduced from €1,875 to €1,775.
• The fee for preliminary examination of an international application will be reduced from €1,930 to €1,830.

At some point in the future there will also be a reduction in the filing, transmittal and grant fees if the application and any relevant documents are submitted in certain formats, once the technology for accepting these formats is made available at the EPO. Fees for applications not filed online (or for applications filed online but with more than one document not in the prescribed format) will increase to €250.

Finally, it will be possible to pay the third year renewal fee up to six months before it falls due. In some cases, this may make it possible for applicants who have filed a PCT application to pay the third year renewal fee upon entry into the European Regional Phase. However, it will still be possible to pay the fee closer to the due date where applicants prefer to do so.

The Hague Agreement governs the international registration of industrial designs. It allows industrial designs to be protected in multiple countries or regions. An applicant may take advantage of the Agreement to file a single “international” design application with the International Bureau (IB) of the World Intellectual Property Office (WIPO).

For example, an applicant would file just one international design application (IDA), designating a selection of countries. The applicant pays the registration fee to WIPO specifically for those countries, and will include everything required by the Hague Agreement, as well as any additional requirements that are specific to the countries they have selected. Depending on the countries selected, there may be further processing, examination, or opposition periods for the designs. Renewal fees, however, are paid through WIPO (in most countries within 5 and 10 years).

This system allows for the filing of up to 100 different designs (provided they are all in the same Locarno class) in a single application. Rather than filing applications in every country individually, designers only need to deal with one application, one filing office, one language and, importantly, one set of filing fees – provided that all of the territories of commercial interest are members of the Agreement. The Agreement is somewhat limited in that not all countries have signed up (notable examples of countries which are not contracting parties include China, India and Brazil) and it was rarely used until Japan and the US joined in 2015. Even so, in many cases use of the Hague system can still save applicants a good deal of time, money and effort.

There are currently 67 members of the Hague Agreement, including many individual European countries. The European Union has been a contracting party of the Hague Agreement since 2008 in its own right and, by extension, all of the member states of the European Union have access to the system, including those who are not direct members of the Hague Agreement independently of their EU membership.

Until the end of January 2018, the UK’s status as a contracting party of the Hague Agreement was somewhat uncertain, thanks to the plans for the UK to leave the EU. On 23 January, the Designs (International Registration of Industrial Designs) Order 2018 was published, this being the final piece of legislation required for the UK to join the Hague Agreement independently of the European Union.

Next, the UK will need to deposit its instrument of ratification and then, three months later, the UK will be a member of the system. Originally the plan was to launch the service in early April. Meeting that deadline is a little unlikely but, assuming that the instrument of ratification is (or was) deposited on schedule, it won’t be too long before the UK is officially a member.

Those who wish to protect their designs will be pleased to learn that they will still be able to file either a UK national design application or an international application through WIPO, with no interruption to this service.

In more good news for designs applicants, Russia also joined the Hague agreement at the end of February 2018.